Inter Partes Reexamination May Proceed Even If The Requester Has a Change-of-Heart

Author: Jeffrey D. Smyth
Editor: Sydney R. Kestle

In In re AT&T Intellectual Property II, LP, No. 16-1830 (Fed. Cir. May 10, 2017), the Federal Circuit held that the Board did not exceed its statutory authority when instituting an inter partes reexamination because a request and a requester were present at the time of institution.

In 2012, LG filed a request for inter partes reexamination of AT&T’s patent related to compressing and transmitting video data. Before the Board could decide whether to institute, LG sought to have its request denied. Importantly, LG did not withdraw its request or withdraw from the proceeding. Rather, LG filed a request to suspend the standard rule that prohibits a requester from filing additional documents pre-institution. The Board denied LG’s request to suspend the rule, and ultimately granted LG’s initial request for reexamination. LG withdrew from the proceeding several months later.

On appeal, AT&T argued that the Board exceeded its authority by instituting reexamination after LG sought to have its request denied. The Federal Circuit disagreed. The Court first noted that its authority to review Board decisions relating to the institution of reexaminations is limited by 35 U.S.C. § 312(c) (effective September 16, 2011),* but that the provision did not apply here. The Court indicated that it could review whether the Board lacked the authority to institute reexamination due to the alleged lack of a request and/or requester because the question did not pertain to whether “the information presented in the request shows that there is a reasonable likelihood that the requester would prevail.” The Court then held that the Board properly acted within its statutory authority because, at the time of institution, a request and a requester (LG) were still involved in the proceeding—it was not until after institution that LG withdrew. The Court declined to further assess the propriety of the decision whether to institute.

The Court also affirmed the Board’s finding that AT&T’s patent was anticipated.

* In September 2011, Congress enacted the America Invents Act, which amended the procedures for inter partes reexamination and created the procedures for inter partes review. Inter partes reexamination procedures are being phased out.


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